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SARB Management Group Pty Ltd T/A Database Consultants Australia v Vehicle Monitoring Systems Pty Limited [2024] FCAFC 6

9 February 2024

Full Federal Court of Australia

Burley, Jackson and Downes JJ

SARB partially successful in carpark overstay patent appeal

The Federal Court’s second patent decision of 2024 is a unanimous decision of the Full Federal Court relating to one of several long-running patent disputes in the field of carpark overstay detection.   In March 2023, Justice Besanko upheld the validity of two patents owned by Vehicle Monitoring Systems Pty Ltd (VMS), both entitled ‘Method, apparatus and system for parking overstay detection’.  His Honour also held that three versions of a vehicle detection and sensor system known as ‘PinForce’ sold by SARB Management Group Pty Ltd were infringing, with the first two versions infringing claims of both patents and the third version infringing only claims of one of the patents.  We reported Justice Besanko’s decision in an earlier blog.

Construction and infringement

SARB’s appeal to the Full Federal Court on infringement was confined to the finding regarding PinForce version 3 in respect of the one patent held to have been infringed by this version. Key to Justice Besanko’s infringement finding was the  construction of claim features directed to the step of determining whether a vehicle has overstayed, and particularly whether this determination is  carried out by the wireless ‘data collection apparatus’ (DCA) rather than solely by the ‘detection apparatus’ (DA) located beneath the carpark space.  Before Justice Besanko, all experts agreed that in the case of PinForce Version 3, all capability of determining overstay in the DA had been removed following a redesign.  The Full Court overturned  Justice Besanko’s decision finding that the claims should be construed to encompass a system where vehicle detection is determined only by the DA (not the DCA).  The effect of this change in construction was that the PinForce version 3 system fell outside the patent claims.

Best method

SARB also appealed the primary judge’s decision on validity, specifically his finding that SARB failed to establish that the two patents were invalid on the ground of best method.  Before Justice Besanko, SARB had  argued that the patent did not include the best method known to the patentee  of communicating data from the subterraneous DA using a functioning wake-up scheme because the patent did not describe the use in this scheme of a specific transceiver (the ASTRX2 transceiver), even though it was known to the inventor to have advantages which made it the best transceiver for communicating data from the subterraneous detection apparatus.   The Full Court, however, agreed with Justice Besanko that the invention disclosed in the two patents related to the wake-up scheme and not the wake-up scheme as carried out by a transceiver with particular features.   In reaching this conclusion, the Full Court emphasised the significance of the embodiments in the specification in identifying the invention, whereas SARB had focussed on the consistory clauses to the challenged claims.  The Court held the disclosure was adequate because the parameters of the wake-up scheme were clearly disclosed in the specification, and there was no evidence that transceivers other than the ASTRX2 could not meet these parameters.

About Pearce IP

Pearce IP is a boutique firm offering intellectual property specialist lawyers, patent attorneys and trade mark attorneys to the life sciences industries (in particular, pharmaceutical, biopharmaceutical, biotech, ag-tech and food tech).  Pearce IP is the 2021 ‘Intellectual Property Team of the Year’ (Lawyers Weekly Australian Law Awards) and was shortlisted for the same award in 2022.  Pearce IP is ranked in IAM Patent 1000 and Managing IP (MIP) IP Stars, in Australasian Lawyer 5 Star Awards as a ‘5 Star’ firm, and the Legal 500 APAC Guide for Intellectual Property.

Our leaders have been recognised in virtually every notable IP listing for their legal, patent and trade mark excellence including: IAM Patent 1000, IAM Strategy 300, MIP IP Stars, Doyles Guide, WIPR Leaders, 5 Star IP Lawyers, Best Lawyers, and Australasian Lawyer 5 Star Awards, and have been honoured with many awards including Australian Law Awards – IP Partner of the Year, Women in Law Awards – Partner of the Year, Women in Business Law Awards – Patent Lawyer of the Year (Asia Pacific), Most Influential Lawyers (Changemaker), among other awards.

MSA 4×4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd [2024] FCA 24

24 January 2024

Federal Court

Downes J

In the first Federal Court patent decision handed down in 2024, MSA 4×4 Accessories Pty Ltd failed to establish infringement by Clearview Towing Mirrors Pty Ltd of MSA’s patent to a mountable storage device, commonly used in off-road and trade vehicles.  The blow was compounded by the Court upholding Clearview’s claim of unjustified threats of infringement under s 128 of the Patents Act 1990 (Cth) and contravention of s 18 of the Australian Consumer Law (ACL) regarding external communications by or on behalf of MSA.  Although moot given the finding of non-infringement, the Court rejected Clearview’s validity challenge.  Significantly, the Court rejected or gave no weight to key parts of Clearview’s expert evidence on obviousness, pointing to significant deficiencies in its preparation.

MSA, as exclusive licensee, and the patentee (a director of MSA), asserted infringement by Clearview of Australian patent AU2009245888 (Patent).  The Patent is directed to a slide-out apparatus for holding and storing items in vehicles, marketed under the name MSA4X4 DropSlide™.  Clearview’s “Easy Slide” product, designed for the same purpose, was at the centre of the infringement dispute.

Unjustified threats

The Court’s finding of non-infringement was not automatically determinative of the unjustified threats counterclaim.   These counterclaims related to two announcements sent by MSA to customers and potential customers, while a further unjustified threats claim related to a letter from the lawyers for MSA and the patentee.  Despite acknowledging that the Court has typically found infringement threats to be unjustified where a patent is held not infringed, Justice Downes held that this will not always be the case.

While differing in tone, all the communications referred to the potential for Clearview to bring infringement proceedings.  However, both the first announcement and the lawyer’s letter specifically referred to the Clearview Easy Slide product infringing the Patent, while the second announcement did not specifically refer to the Clearview product.  This appeared to be key to the Court’s finding that the former constituted a threat of infringement while the latter did not, although the ‘strident’ tone of the first announcement was also a factor.

Having made this finding, the Court then found that MSA and the patentee had failed to discharge their onus to demonstrate why these threats were not unjustified in light of the non-infringement finding.  The ACL claim followed the finding on unjustified threats.

The obviousness case and expert evidence

Clearview’s invalidity case ultimately failed.  While moot given the non-infringement finding, her Honour’s judgment on invalidity is a salient reminder of the expectations of Australian courts when it comes to the preparation of expert evidence.

Justice Downes excluded some expert evidence led by Clearview on obviousness because the expert had been provided with the Patent before giving his evidence on his knowledge and experience as at the Patent’s priority date.  Her Honour accepted that it is not a blanket rule that expert evidence should always be excluded when the expert had reviewed the patent in suit prior to giving evidence on the issue of obviousness. However, in this case there was no evidence that Clearview’s lawyers had instructed him on what it meant for an invention to be “obvious” as that term is understood in patent litigation. There was also insufficient evidence to demonstrate what the expert understood “obvious” to mean when he expressed his opinions. Her Honour therefore determined not to admit key paragraphs of the expert’s first affidavit into evidence.

Justice Downes also gave no weight to the expert’s evidence as to the approach he would have taken to a hypothetical ‘design task’ because the design task parameters provided to the expert included parameters which did not form part of the common general knowledge at the priority date.  Her Honour further held that the framing of the design task infected the expert’s evidence on obviousness as it impermissibly enlarged the “body of knowledge and information” against which inventive step was to be tested, which was contrary to principle, and infected the expert’s evidence.

Finally, Justice Downes identified significant shortcomings in Clearview’s evidence as to whether one of the prior art documents would have been “ascertained, understood, [and] regarded as relevant” at the priority date, as required by the Patents Act 1990 (Cth) in its pre-Raising the Bar form.  In particular, her Honour was not persuaded that the expert would have searched Google Patents which became available only a year before the priority date. Nor was her Honour persuaded that the expert would have used the search terms set out in his affidavit evidence, given the choice of search terms was likely impermissibly influenced by exposure to the Patent and the design task parameters (which included parameters that did not form part of the common general knowledge as at the priority date).

About Pearce IP

Pearce IP is a boutique firm offering intellectual property specialist lawyers, patent attorneys and trade mark attorneys to the life sciences industries (in particular, pharmaceutical, biopharmaceutical, biotech, ag-tech and food tech).  Pearce IP is the 2021 ‘Intellectual Property Team of the Year’ (Lawyers Weekly Australian Law Awards) and was shortlisted for the same award in 2022.  Pearce IP is ranked in IAM Patent 1000 and Managing IP (MIP) IP Stars, in Australasian Lawyer 5 Star Awards as a ‘5 Star’ firm, and the Legal 500 APAC Guide for Intellectual Property.

Our leaders have been recognised in virtually every notable IP listing for their legal, patent and trade mark excellence including: IAM Patent 1000, IAM Strategy 300, MIP IP Stars, Doyles Guide, WIPR Leaders, 5 Star IP Lawyers, Best Lawyers, and Australasian Lawyer 5 Star Awards, and have been honoured with many awards including Australian Law Awards – IP Partner of the Year, Women in Law Awards – Partner of the Year, Women in Business Law Awards – Patent Lawyer of the Year (Asia Pacific), Most Influential Lawyers (Changemaker), among other awards.